In the United States, there is a growing problem with claims being invalidated through IPR (inter parties review) and with claims being held non-patent eligible under 35 U.S.C. 101 or invalidated under 35 USC 112. It has become vital to draft strong specifications and craft claims that will survive 112 and 101 issues, and can be patented in order to capture infringers. It is important to recognize the value of drafting “licensable” claims, namely claims that a third party will be encouraged to license, and not attack in the courts or under IPR.
Inside Counsel sat down with patent preparation and prosecution experts Bryan Wheelock, principal with intellectual property firm Harness Dickey, and Mauricio Uribe, partner with intellectual property firm Knobbe Martens. They shed some light on tips for claim and specification drafting in the U.S., as well as detailing how one might navigate prosecution issues, while also maximizing the ability to capture potential infringers and mitigating potential devaluation of a patent during licensing negotiations.
“The high invalidation rates of post issuance review processes such as inter parties reviews are partly a result of overreaching by patent applicants, partly a result of the intentional design of the proceedings, and partly a result of the patent office’s implementation,” explained Wheelock.